Monday, August 10, 2015

Granting Respondent Umberto Sulpasso's motion for summary judgment, the Board dismissed this petition for cancellation of his registration for the mark UROCK, in the stylized form shown below, for digital media and live musical performances, ruling that Petitioner UNL's claims were barred by the doctrine of claim preclusion. A prior opposition to Sulpasso's underlying application had been dismissed (here) under Rule 2.132 due to the then opposer's failure to take testimony or submit evidence. The Board ruled that the two proceedings involved "the same nucleus of operative facts such that both proceedings stem from the same set of transactional facts," and consequently the doctrine of claim preclusion applied. The Urock Network, LLC v. Umberto Sulpasso, 115 USPQ2d 1409 (TTAB 2015) [precedential].

Under the doctrine of claim preclusion, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action." For claim preclusion to apply, there must be:

(1) identity of parties (or their privies);
(2) an earlier final judgment on the merits of a claim; and
(3) a second claim based on the same set of transactional facts as the first.

Although the prior opposition was brought in the name of John Kevin Timothy dba UROCK Radio, petitioner conceded that it is "the same person." The petition for cancellation identified Timothy as petitioner's acting manager.

Petitioner UNL contended that the opposition was terminated due to a "technical procedure," but the Board pointed out the proceeding was dismissed with prejudice. "[W]hether the judgment in the prior proceeding was the result of a dismissal with prejudice or even default, for claim preclusion purposes, it is a final judgment on the merits"

The Restatement (Second) of Judgments § 19 (1982) provides that "a valid and final personal judgment rendered in favor of the defendant bars another action by the plaintiff on the same claim." This bar encompasses relitigation of "claims that were raised or could have been raised" in an earlier action. The question was whether the claims in the two proceedings "are based on the same set of transactional facts."

[R]elevant factors include whether the facts are so woven together as to constitute a single claim in their relatedness in time, space, origin, or motivation, and whether, taken together, they form a convenient unit for trial purposes.

In the cancellation proceeding, petitioner UNL asserted rights in the mark THE UROCK NETWORK, claiming priority and likelihood of confusion, whereas the opposition focused on its mark UROCK RADIO. The Board, however, rejected that argument because opposer had also relied on its rights in THE UROCK NETWORK. "The alleged prior use of the mark THE UROCK NETWORK clearly not only relates to, but was a part of, the ’690 opposition."

There can be no question that the ’690 opposition and this cancellation necessarily involve the same nucleus of operative facts such that both proceedings stem from the same set of transactional facts. UNL and its alter ego Mr. Timothy, plainly not only had the facts necessary to bring the claim of likelihood of confusion relating to alleged priority rights in the mark THE UROCK NETWORK based on prior use at the time of filing the ’690 opposition, but he actually included that mark in the ’690 proceeding.

The Board therefore found no genuine dispute regarding the applicability of claim preclusion, and it granted Respondent Sulpasso's motion for summary judgment.